DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of the following in the reply filed on 8/26/2026 is acknowledged:
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The traversal is on the ground(s) that Species 1 and Species 2 are not mutually exclusive. Applicant argues that “sensing a force on the artificial foot is below a force threshold (claim 14)” is not mutually exclusive to “receiving a first signal from a first sensor measuring an amount of force applied to a surface (claim 1)”.
This is not found persuasive because these two limitations are completely distinct and mutually exclusive. Claim 1 fails to claim a threshold while claim 14 fails to require a sensor signal; sensing can be done by the amputee. Applicant would never accept a statement saying the prior art teaches claim 14, it therefore, inherently teaches all limitations of claim 1. Claim 1 is a method of moving an artificial foot couple by a prosthetic ankle to a shank link using force, angle and position sensors and moving a control valve; claim 14 uses none of these limitations. Claim 14 is only a collection of method steps without any order.
Examination Burden:
This is not found persuasive because, as previously stated, said species are independent or distinct because they are not connected in design, operation or effect. The species are distinct and deviating from each other wherein Species 1 requires sensors for measuring angle and position whereas Species 2 requires sensing “below a force threshold” and “exceeded the force threashold” and a “weighted position”.
Search Burden:
Species 1 requires a different keyword search for angle and position sensors (including at least A61F2002/7625) not needed in Species 2.
Species 2 requires a different keyword search for “below a force threshold” and “exceeded the force threshold” and a “weighted position” limitations not need for Species 1.
In addition, these species are not obvious variants of each other based on the current record.
The examiner maintains a search and examination burden as stated in the restriction requirement. To assist in the prosecution of the application and make a quality patent, please point out any references which you believe are most relevant to the claimed invention.
The requirement is still deemed proper and is therefore made FINAL.
Claims 6-7 and 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 8/26/2026.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 and 8-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,144,748. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are broader than the patented claims. Current claim 1 is identical to patented claim 1 only lacking the limitation “a hydraulic actuator couple between the shank link and a top surface of the artificial foot”.
Current claim 2 corresponds to patented claim 2.
Current claim 3 corresponds to patented claim 18.
Current claim 5 corresponds to patented claim 5.
Current claim 8 corresponds to patented claim 8.
Current claim 9 corresponds to patented claim 9.
Current claim 10 corresponds to patented claim 10.
Current claim 11 corresponds to patented claim 11.
Current claim 12 corresponds to patented claim 12.
Current claim 13 corresponds to patented claim 13.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 4 depends on claim 2 and claims locking the artificial foot in the second position. It is the examiner’s position that locking requires closing a control valve so there is no flow. Claim 4, depending on claim 2, claims wherein the resistance to a flow of the hydraulic fluid in the second position is zero. It is the examiner’s position that zero resistance to flow means the fluid is free to flow. A resistance of zero (freely flows) directly conflicts with no flow. See par. 0093 of the specification teaching the opposite. When the control valve is opened (not locked), there is a greater flow rate and less resistance. See your claim 14.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4, 8-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kaltenborn et al (2009/0204230).
Kaltenborn et al teaches a method of moving an artificial foot (at least 10) coupled by a prosthetic ankle 5 to a shank link (artificial lower leg; see par. 0018, 0038 including attachment 2 and web 3), the method comprising:
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receiving a first signal from a first sensor measuring an amount of force (moment sensor 21 wherein torque is a function of force; also, see par. 0007 and claim 1 stating, “or a force effecting a torque on the ankle joint”) applied to a surface by the artificial foot in a first position (the first position can be any position within the known gait cycle shown below);
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receiving a second signal from a second sensor measuring a relative angle between the shank link and the artificial foot (see at least claim 1 and par. 0007 and 0036, ankle-angle sensor 7) in the first position;
receiving a third signal from a third sensor measuring a position (see at least par. 0007 and claim 1, absolute-angle sensor 20 and par. 0037 teaching acceleration with gyroscope) of the artificial foot in the first position;
calculating an output signal (via the control unit), using the first signal, the second signal, and the third signal, to move the prosthetic foot to a second position (see at least par. 0008, 0017, “influence the parameters of a gait cycle by previously measured sensor signals for said gait cycle” and “the damping arrangement 17 can be adjusted in a continuous manner (claim 6)”);
sending the output to a control valve (see at least par. 0040 and description directly above) in a first position on a hydraulic actuator; moving the control valve to a second position (different than the first position) based on the output;
changing a resistance to a flow of the hydraulic fluid through the hydraulic actuator (see at least par. 0040 and claim 1 having a damping arrangement 17 which having a resistance to flow which can be continuously adjusted; see claims 6 and 10);
and moving the artificial foot into a second position (inherent to the joint ankle-foot configuration with forces acting thereon/therein; see included figure below of a natural ankle).
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Claim 2, the artificial foot is locked in a second position, for example, to stand. The first position can include any other proceeding phase of gate (see incorporated figures above). See at least par. 0015 and 0046 wherein a dorsal stop (lock) is formed in the second position.
Claim 3, regarding the first position is at a midstance position, see the incorporated figure showing the known gait cycle. See par. 0048 teaching the foot is capable of dorsiflexion. Kaltenborn et al teaches: [0050] If the heel impact after the swing phase and at the beginning of the stance phase is detected during walking by a negative ankle moment in particular, then the valve for the plantar flexion is controlled in such a manner that it closes with an increasing ankle angle in the direction of plantar flexion and hence forms a stop for the plantar flexion.
Therefore, at heel strike position (second position), the valve for plantarflexion is locked meeting the language, “locking the artificial foot in the second position”.
Claim 4, see par. 0040 wherein the valves are on or off. In the off position, the resistance is zero, whereas the opposing valve forming a lock in a second position is on.
Claim 8, referring to at least par. 0040, the control valve is controllable between at least off/on position. Inherently, the “on” position increases the resistance to a flow of the hydraulic fluid to form a lock in a second position such as standing after the first position. See at least claim 6 teaching the damping arrangement can be adjusted in a continuous manner.
Claim 9, referring to at least par. 0040, the control valve is controllable between at least off/on position. Inherently the “off” position decreases the resistance to a flow of the hydraulic fluid to allowing movement to a second position from a first position. See at least claim 6 teaching the damping arrangement can be adjusted in a continuous manner.
Claim 11, the first sensor 21 is positioned in web 3 which is interpreted as part of the shank link and configured to measure force, torque, or both applied to the prosthetic ankle or artificial foot as discussed in the main portion of the rejection above.
Claim 12, the second sensor is an angle sensor 7 positioned in the prosthetic ankle and configured to measure a relative angle between the shank link and the artificial foot. See discussion in the main portion of the rejection above.
Claim 13, par. 0037 teaching an inertial measurement sensor (accelerometers and gyroscopes). See discussion in the main portion of the rejection above for the third sensor.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kaltenborn et al (2009/0204230) in view of Steele et al (2014/0277581).
Kaltenborn et al teaches the method of moving an artificial foot as described above. However, Kaltenborn et al fails to teach the control valve is a voice coil valve.
Steele et al also teaches a method of moving an artificial foot wherein the control valve is a voice coil valve.
It would have been obvious to one having ordinary skill in the art to have used the voice coil valve taught by Steele et al replacing the valve of Kaltenborn et al such that the force produced by the voice coil actuator is proportional (and substantially linear) to the current applied; the amount of current can be selected and varied to selectively position a coil with respect to a magnet; use less power and are lighter in weight. See par. 0008-0112 and 0060 of Steele et al for all additional advantages.
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Kaltenborn et al is considered the closes prior art of record; there is not enough evidence that the mathematical limitations of claim 5 would naturally flow therefrom.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRUCE EDWARD SNOW whose telephone number is (571)272-4759. The examiner can normally be reached 6:00 am - 5:00 pm Monday through Thursday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melanie Tyson can be reached on 5712729062. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRUCE E SNOW/Primary Examiner, Art Unit 3774
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